Recent Blog Posts

Secondary Considerations Error Does Not Warrant Reversal
As we’ve previously reported, patent owners have had little success arguing secondary considerations of non-obviousness during inter partes review. Underscoring the challenge that patent owners face, the Federal Circuit recently affirmed a PTAB obviousness determination despite finding that it had erred in its consideration of the patent owner’s evidence regarding objective indicia of non-obviousness.
Background
The patents at issue in South Alabama Medical Science Foundation v. Gnosis S.p.A. claim methods and a composition related to “administering the ‘natural’ stereoisomer of 5-methyl-tetrahydrofolic acid...More

Denial of IPR Institution Doesn’t Make Invalidity Case UnreasonableShort of invalidating a patent, can the outcome of IPR dictate the outcome of a district court case? The interplay between PTAB and district courts remains uncertain. As we’ve previously reported here and here, sometimes district courts give weight to PTAB decisions, and sometimes they don’t.
In one recent case, the Western District of Wisconsin considered whether the PTAB denial of institution of inter partes review meant that the defendant’s obviousness case was objectively unreasonable, supporting a finding of willful infringement.
Enhanced...More

Pharma industry continues efforts to exempt patents from IPRThe pharmaceutical industry continues its efforts to exempt pharmaceutical and biotechnology patents from inter partes review (IPR). Neither the House’s Innovation Act nor the Senate’s PATENT Act currently contain any provisions that would exempt particular patents from these proceedings. But as we reported in June, some members of the Senate judiciary committee appear sympathetic to addressing the pharmaceutical industry’s concerns with an exemption for pharmaceutical and biotechnology patents.
Objections of the pharmaceutical industry
The pharmaceutical industry objects to the use of post-grant...More

PTAB Judges Give Discovery Insights and Allude to Rule ChangesIn a Boardside Chat on July 14, two PTAB judges provided insights regarding discovery best practices and strategies in AIA proceedings and alluded to upcoming rule changes that may change the standard for seeking discovery. The panel featured Lead Judge Grace Obermann and Judge Justin Arbes.
Discovery guidelines
The judges referred to the three types of discovery available in PTAB proceedings under 37 C.F.R. § 42.51: (1) initial disclosures; (2) routine discovery; and (3) additional discovery. Routine discovery includes exhibits cited in the...More

PTAB Denies Institution in Cepheid v. Roche: PCR Primers Found Not Inherently AnticipatedOn June 11, 2015, the PTAB denied institution of Cepheid’s petition seeking inter partes review of Patent No. 5,643,723 directed to methods of detecting tuberculosis in humans (IPR2015-00255). To defeat institution, the patent owner successfully used its preliminary response to persuade the Board to (a) narrowly construe claim terms (despite the broadest-reasonable-construction standard), and (b) reject inherent anticipation and obviousness arguments offered by the petitioner’s expert witness.
Background
The claims of the ’723 patent are “directed to methods based on the polymerase...More

Hatch-Waxman and BPCIA Patents May Be Exempted from Post-Grant Proceedings Under Pending Senate LegislationOn Thursday, June 4, the Senate Judiciary Committee approved the Protecting American Talent and Entrepreneurship (PATENT) Act. We previously reported the significant provisions of the bill.
Several members of the Judiciary Committee expressed support for a further proposal that would exempt from PTO post-grant proceedings patents that are subject to the Hatch-Waxman or Biologics Price Competition and Innovation Act (BPCIA) processes. In his prepared statement, Senator Grassley, Chairman of the Judiciary Committee said:
In addition, there is a proposal by the life...More